August 18, 2010
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Quick links to this issue’s stories…
APLF News
IP Law Updates
For IP Practitioners — Notes and Comments on Improving Practice Skills
Member Firms in the News
APLF News
APLF Annual Meeting In Chicago On Sep 29-Oct 1
The Association of Patent Law Firms (APLF) proudly presents its 2010 Annual Meeting to be held at the Hyatt Regency in Chicago, IL, from September 29 to October 1. The premier event brings together the global IP community including lawyers and professionals whose practices are dedicated to patent, trademark and copyright law.
Come and hear the dynamic speakers at this year’s meeting including David L. Berdan, INVISTA S.à r.l., Kirk Goodwin, Whirlpool Corporation, Monica Winghart, The Clorox Company, and many more leaders from the IP industry.
The annual meeting will not only offer top-notch programs that combine current IP topics with practice management issues but will also offer unique networking functions including receptions, roundtables, luncheons and coffee breaks that are exceptional sources for both visibility and one-one-one interaction. It is a venue to mingle with your colleagues, see and experience new ideas in a dynamic environment.
Don’t delay! Register for the APLF Annual Meeting and take advantage of the Early Bird Registration special! For further information, please visit the website at www.aplf.org to download the APLF Annual Meeting brochure or contact us at admin@aplf.org.
Upcoming APLF Teleconferences:
September 8, 2010: New Matter and Other Topics in European Patent Prosecution for US Practitioners
Time: 12:30 – 1:30 pm EST
Presenter: Robin Browne, Director and Shareholder, Hepworth Browne Ltd.
September 15, 2010: The New Compensation Choices: Competencies, Levels, Tiers, Origination and Beyond
Time: 12:30 – 1:30 pm EST
Presenter: Ronda Muir, Esq., Robin Rolfe Resources
IP Law Updates
IP Australia Increased Some Patent Fees On August 1, 2010
Following a review of its fee structure and consultation with customers, IP Australia made a formal request to Government to increase patent fees. This request was approved and IP Australia increased some patent fees and introduce two new fee items as of August 1, 2010. As the increases only relate to some patent fees, all fees for trade marks, designs and plant breeder’s rights will remain the same. This is the first increase to fees by IP Australia in over three years. The first new fee is for the lodgement of an application for a provisional patent by electronic means. This will be lower than the fee for lodgement by non-electronic means. The second new fee is for amendments to complete patent specifications after the specification has been accepted. The fee will apply where an amendment increases the total number of claims to more than 20. The fee will be charged on each additional claim and be due on the grant of the amendments, rather than on the filing of the application to amend. This means that the fee will be due on ‘applications to amend’ that are filed before August 1, 2010 but granted after this date. A complete schedule of Patent Fees may be found at http://www.ipaustralia.gov.au/patents/fees_index.shtml
OHIM Announces Changes Of Practice For Opposition Proceedings
On August 2, 2010, OHIM announced that it will introduce changes in practice in suspensions and extensions of time, and new guidelines on the presentation of evidence of proof in opposition proceedings. The changes will take effect on September 15, 2010. Complete details of these changes may be found at http://oami.europa.eu/ows/rw/news/item1529.en.do.
U.S. Patent And Trademark Office Publishes Interim Guidance For Subject Matter Eligibility Post Biliski
The U.S. Patent and Trademark Office has prepared further interim guidance for the patent examining corps to use when determining subject matter eligibility under 35 U.S.C. § 101 in view of the recent decision by the United States Supreme Court in Bilski v. Kappos. This interim guidance, which was published in the Federal Register on July 27, 2010, is a supplement to previously issued interim instructions dated August 24, 2009, and it supersedes the interim guidance memo to the examining corps dated June 28, 2010. The USPTO is seeking public comment on this interim guidance and intends to issue final guidance after evaluating the public comments. Comments should be sent to Bilski_Guidance@uspto.gov and must be received by September 27, 2010. Additional instructions on submitting comments can be found in the Federal Register notice. Additional information and links to the Federal Register notice may be found at http://www.uspto.gov/news/pr/2010/10_35.jsp.
U.S. Copyright Offices Announces Classes Of Works Exempt From Prohibition Against Circumvention
On July 26, 2010, the Librarian of Congress, on the recommendation of the Register of Copyrights, announced the classes of works subject to the exemption from the prohibition in 17 U.S.C. section 1201(a)(1) against circumvention of technological measures that control access to copyrighted works. Persons making noninfringing uses of six classes of works will not be subject to the prohibition against circumventing access controls during the next three years. The regulatory text, the recommendation of the Register of Copyrights, and the statement of the Librarian of Congress may be found on the Copyright Office website at http://www.copyright.gov/1201/
CIPO Proposes Changes To The Manual Of Patent Office Practice – Chapter 16
CIPO has issued a draft revised Chapter 16: Computer-Implemented Inventions of the Manual of Patent Office Practice. Stakeholders have until August 19, 2010 to provide comments on the draft chapter. Information about the CIPO announcement and the draft of the revised Chapter 16 is available at http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02486.html.
Serbia To Join The EPO
Serbia will become the 38th member state of the European Patent Convention on October 1, 2010. European patent applications filed on or after this date will include the designation of the new contracting state, but it will not be possible to designate Serbia retroactively in applications filed beforehand. The EPO can, however, accord applications filed in September the filing date of 1 October upon the applicant’s request. Nationals of and residents in Serbia will also be able to file applications under the Patent Co-operation Treaty (PCT) with the EPO from 1 October. Read the announcement at http://www.epo.org/topics/news/2010/20100802.html.
For IP Practitioners — Notes and Comments on Improving Practice Skills
Federal Circuit Rebukes Attorney’s Attempt To Collect Potential $5.4 Trillion In False Marking Damages
Matt Walters, Hovey Williams – mwalters@hoveywilliams.com
On June 10, 2010, the Federal Circuit decided Pequignot v. Solo Cup and halted an attorney’s attempt to collect up to $500 dollars in damages for each of the over 21 billion mismarked articles sold by Solo Cup. False marking occurs if someone marks an “unpatented article” as being patented with intent to deceive the public. A plaintiff can receive half of the statutory maximum penalty of $500 for each falsely marked article.
» Read more
Fallout Of The Bilski Decision
Brian Cheslek, Price, Heneveld, Cooper, DeWitt & Litton LLP – bcheslek@priceheneveld.com
On June 28, 2010, the Supreme Court unanimously held that the patent application filed by inventors Bernard Bilski and Rand Warsaw, which related to a method for hedging risks and commodities trading, was abstract, and therefore, not patent eligible. However, more importantly, the Supreme Court also ruled by a narrow 5 to 4 vote that business methods are not excluded from patent protection. The ruling leaves open the possibility that patent applications related to software technology, medical testing procedures, and various other business methods may be patented.
» Read more
Use It Or Lose It… What’s The Law In Australia?
Gail Hill, FB Rice & Co. – ghill@fbrice.com.au
All mature trade mark registration systems have provision for removal or limitation of a registration for non use. In Australia the removal provisions have traditionally been strictly applied. Recent decisions indicate a trend towards more active exercise of the Registrar’s discretion in favour of the registered owner, as illustrated by the Trade Marks Office decision involving an application for removal of the SORBENT trade mark for non use: AB SCA Finans and SCA Hygiene Australasia Pty Limited v Sorbies Pty Ltd [2010] ATMO 19
» Read more
New Regulations For Registering Domain Names In China
Xiang Gao, Peksung Intellectual Property Ltd. – gxiang@peksung.com
Companies seeking to register .CN domain names should beware of the potential dangers.
China’s Internet Network Information Center (CNNIC), authorised by the Ministry of Industry and Information Technology of the People’s Republic of China (MIIT), has responsibility for operating and administering China’s domain name registry: the .CN country code top level domain (ccTLD) and the Chinese Domain Name (CDN) system. A Chinese domain name contains Chinese characters.
» Read more
A Funny Thing Happened On The Way To The Forum…
Dion Ferguson, Sughrue Mion, PLLC – dferguson@sughrue.com
In re Zimmer Holding, Inc., Zimmer, Inc., and Zimmer US, Inc.
Federal Circuit, 2010-M938, June 24, 2010
Author: Dion Ferguson
The Federal Circuit provided relief for Zimmer Holding, Inc., Zimmer, Inc., and Zimmer US, Inc (collectively, “Zimmer”) by granting their petition for writ of mandamus to transfer venue. In the decision, the Federal Circuit noted that a plaintiff will not be allowed to “game the system” by creating a legal fiction as the connection basis for a chosen forum.
» Read more
Member Firms in the News
APLF Welcomes Three New Firm Members
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Rothwell, Figg, Ernst & Manbeck, P.C. (Washington, DC) is an IP firm specializing in sophisticated technological areas, such as the biotechnology and pharmaceutical fields; computer hardware and software and the Internet; semiconductors; advanced electronics; medical devices; and a wide variety of mechanical systems and devices.
Backström & Co. Attorneys (Helsinki, Finland) is recognized by several international publications such as European Legal 500, Chambers and Partners and MIP as one of Finland’s leading firms in IP law.
Law Office of Noah V. Malgeri (Boston, MA) provides patent counseling, prosecution, and litigation services to innovative companies and entrepreneurs, with a particular focus on alternative energy, aerospace, defense, automotive, recreational, and medical device technologies.
We look forward to each firm’s active involvement in APLF live conferences, roundtables, committees and the APLF IP Law Bugle.
Ridout & Maybee LLP Co-sponsors 7th Annual VINIP Conference
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Schwartz & Partner and Ridout & Maybee LLP are pleased to announce that the 7th annual VINIP conference will be held September 13-17, 2010, in the Langenlois region of Austria, close to Vienna. VINIP is an IP law conference which combines informative round-table discussions of pertinent IP topics with activities centered around cycle touring, hiking, and the enjoyment of fine wines.
The Langenlois region is known for its excellent cycling and hiking, as well as its outstanding food and wine.
The professional program for year’s program will cover several topics of importance to IP practitioner in all areas of specialization, including reviews of recent developments in North America and Europe, and a program on “IP in the public eye”. We have designed a series of round table discussions on these topics. To compliment the business component, we have planned a social program full of outdoor activities, wine tastings and fine dining. The conference is being held at the Wine and Spa Resort Loisium hotel in Langenlois, with the final night at the Grand Hotel, Vienna.
We hope you can join us for this outstanding networking event.
If you would like to attend please contact Amanda Natividad of Ridout & Maybee LLP at vinip@ridoutmaybee.com or by phone at 613-288-8021.
FB Rice Welcomes Engineering Leader To The Partnership
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FB Rice & Co is delighted to announce the appointment of Sylvan Browne as leader of the Melbourne Engineering practice. He will become a partner of the firm on September 1, 2010.
Sylvan specialises in patents and designs, with an emphasis on drafting and prosecution in a range of electrical, software, medical, bioinformatics and mechanical technologies. He also advises clients on developing patent strategies to suit their commercial objectives, with a specific focus on patent protection in the North American, European and Asian markets.
Prior to returning to the Australian profession in 2008, Sylvan worked in Canada for four years, as a patent agent before the Canadian Intellectual Property Office and the US Patent and Trademark Office.
FB Rice & Co Managing Partner Brett Lunn said that Sylvan’s reputation for excellence combined with a commercial approach made him an excellent fit for the firm.
‘We are excited to welcome an attorney of the calibre and experience of Sylvan to the FB Rice & Co partnership,’ said Brett.
‘FB Rice & Co has been very focused over the last 12 months on strategically reviewing our practice strengths and resourcing needs to ensure that our service offering reflects our clients’ needs. Sylvan’s appointment enhances our ability to look after our existing clients and broaden our client base into new areas.
Sughrue Mion San Diego, CA Office Moves To La Jolla, CA
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Sughrue is pleased to announce that it has made its new home in La Jolla, California. Previously located in the heart of San Diego’s courthouse district, Sughrue has moved its southern California office to the thick of the technology and innovation epicenter – La Jolla. Please take note of our new contact information: 4250 Executive Square, Suite 900, La Jolla, California 92037. Our phone and fax numbers are: (tel) 858.795.1180 (fax) 858.795.1199.
Sughrue Mion’s Ellen Smith Elected To DC Bar Intellectual Property Steering Committee
Partner Gary D. Krugman Of Sughrue Mion To Speak At FICPI Forum In Munich, Germany
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Gary D. Krugman, a former judge at the Trademark Trial and Appeal Board, will be a panelist at the annual FICPI Forum to held in Munich, Germany September 8 – 11, 2010. Mr. Krugman will present the U.S. perspective in a panel entitled “Review of European Trade Mark System”.
Mr. Krugman counsels clients in all aspects of trademark and unfair competition law. His practice includes searching and clearance of marks, filing and prosecution of applications, and litigation before the Trademark Trial and Appeal and in federal court. Mr. Krugman also serves as an expert in trademark litigation matters. He is the author of Trademark Trial and Appeal Board Practice and Procedure, a treatise published by Thomson/West. He is a frequent speaker and lecturer.
Leigh Ann Lindquist Of Sughrue Mion To Moderate Counterfeiting Panel At 2010 IPO Annual Meeting
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Leigh Ann Lindquist, a partner in Sughrue’s Trademark Department, will moderate a panel discussion at IPO’s Annual Meeting in Atlanta, Georgia entitled “Stopping Counterfeiting Around The World: A ‘How To’ Session”. The IPO Annual Meeting will be held from September 12 – 12, 2010.
Ms. Lindquist’s practices encompasses trademark, unfair competition and copyright law. She regularly counsels clients in these areas. In addition to assisting clients in selection and clearance of marks, and filing and prosecution of trademark applications, Ms. Lindquist manages worldwide trademark portfolios for clients and develops and implements watching programs. She also litigates before the Trademark Trial and Appeal and in federal court.
2010 LES Annual Meeting
Discount for APLF members who attend the 2010 LES Annual Meeting
APLF Members
1 Place Patent Attorneys + Solicitors · Backström & Co. Attorneys · Berken IP S.R.L. · Boyle Fredrickson S.C. · Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd. · Castro & Pal Abogados · Cikato Lawyers – Intellectual Property · Cook Alex Ltd. · Dumont Bergman, Bider & Co, S.C. · FB Rice & Co. · Fernandez Secco & Asociados · Guerra Advogados Associados · Hepworth Browne · Hovey Williams LLP · Kilburn & Strode LLP · Law Office of Noah V. Malgeri · Maiwald Patentanwalts GmbH · Martinez & Moura Barreto · MBM Intellectual Property Law · McAndrews Held & Malloy, Ltd · McDonnell Boehnen Hulbert & Berghoff LLP · Millen, White, Zelano & Branigan P.C. · Ostrolenk Faber LLP · Pakistan Law · Peksung Intellectual Property Ltd. · Price, Heneveld, Cooper, DeWitt & Litton · Ridout & Maybee LLP · Robic, LLP · Rothwell, Figg, Ernst & Manbeck, P.C. · Sughrue Mion, PLLC · Thomas, Kayden, Horstemeyer & Risley, L.L.P. · Trung Thuc JSC · Valadares Law Group LLP
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